Setback for Cipla as court rules in favour of Roche

Mumbai: Swiss drug maker F Hoffman-La Roche Ltd won a partial victory in its legal battle against India’s Cipla Ltd over anti-infection drug valganciclovir, with the Bombay high court ruling in favour of the Swiss company in a trademark infringement case.

However, the court adjourned a patent infringement case for eight weeks because Roche’s patent on the drug itself has been set aside by the Madras high court till 31 January.

The resolution of this dispute will mark another step in the evolution of India’s new patent laws, which came into effect only in 2005.

The Bombay high court’s decision also links the dispute, which was originally over generics or off-patent drug company Cipla’s effort to launch a copycat version of a drug patented in India, to the process followed for the award of the patent.

The Madras high court had set aside the patent till 31 January because it wants the Chennai patent office to hear a so-called pre-grant opposition filed by the Tamil Nadu-based patient group, Tamil Nadu Network of People with HIV/AIDS.

Companies, individuals and activist groups opposed to an issue of a patent are allowed to file pre- or post-grant oppositions at the patent office.

Roche filed an appeal against the Madras high court’s order in the Supreme Court on Wednesday.

Roche, in a September petition to the Bombay high court, had sought an injunction against Cipla’s decision to market a copy version of the anti-infection drug valganciclovir, which is patented by Roche under the brand name Valcept.

Roche has been marketing this drug under the brand name Valcyte in the global market including India.

According to Roche, the court has injuncted Cipla from using the name Valcept for its generic drug as it is “deceptively and confusingly similar” to Roche’s brand name Valcyte, which has been registered and in use for long.

However, the court has allowed three weeks’ time for Cipla to comply with the order.

“We have been granted time to decide the future course of action, which may include a legal challenge as well,” said Cipla’s managing director Amar Lulla.

A Roche executive, who did not wish to be identified, said the Bombay high court adjourned the patent infringement case because it wants to wait for the Supreme Court’s decision on Roche’s appeal.

The Valcyte case is the second patent infringement suit filed by Roche in India this year.

The Swiss firm had moved a similar petition in the Delhi high court in January against Cipla’s decision to sell a generic version of its patented lung cancer drug erlotinib under the brand name Erlocip. The court had then refused to restrain Cipla from selling the drug, sold by Roche under brand name Tarceva.

Roche has appealed against this ruling as well in a higher bench of the Delhi high court.